The Complainant is Granicus, LLC, United States of America (“United States” or “U.S.”), represented by Kirkland & Ellis, United States.
The Respondent is Perfect Privacy, LLC, United States / Milen Radumilo, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 29, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2022.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 24, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundThe Complainant is a company providing cloud-based solutions for communications, management, and digital services to over 5,500 public sector organizations. The Complainant has been using the GOVDELIVERY service mark continuously since at least July 25, 2001. Through extensive use of its well-known family of “GOV” marks, the Complainant connects over 280 million people around the globe through the creation of a powerful network to enhance citizen engagement. The Complaint is also the owner of a several trademarks and service marks, inter alia, U.S. Reg. No. 5,911,881 for GOVDELIVERY, registered on November 19, 2019 (the “Complainant’s Trademark”).
GovDelivery is one of the products and services offered by the Complainant involving authorized digital engagement platform for email, social and text communications. It is used by a variety of federal agencies in the United States. When government employees log into their GovDelivery accounts, they do so by going to the domain name
The Disputed Domain Name was registered by the Respondent on August 31, 2021, over two decades after the Complainant’s registration of the domain name
The Complainant’s primary contentions can be summarised as follows:
(a) The Dispute Domain Name is confusingly similar to the Complainant’s Trademark and registered domain name. The dominant portion of the Disputed Domain Name “govdelivery” is identical to the Complainant’s Trademark and registered domain name. The only element which differentiates the Complainant’s Trademark from the Disputed Domain Name is the addition of the term “service” in front of “govdelivery” to read “servicegovdelivery”. This only enhances the confusion with the Complainant’s domain name and Trademark since the Complainant also uses the domain name
(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or service. The Disputed Domain Name does not resolve to a legitimate webpage, and instead it redirects to a website with multiple pop-up windows, which likely contain malware. Furthermore, the Respondent does not have any current business relationship with the Complainant.
(c) Both the Respondent’s registration of and its use of the Disputed Domain Name show the Respondent’s bad faith. The Respondent intentionally registered the Disputed Domain Name knowing that users trying to go to “www.admin.govdelivery.com” website or trying to find the Complainant’s services at “www.services.govdelivery.com” website might type the Disputed Domain Name instead. The Respondent uses the Disputed Domain Name to redirect users to a website, which contains various pop-up windows. The Respondent has also put the Disputed Domain Name up for sale.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in the Complainant’s Trademark, based on its trademark registration listed above in Section 4.
It is well established that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”), “.com” in this case, may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name incorporates the Complainant’s Trademark in its entirety with the addition of the term “service”. UDRP panels have consistently found that the addition of other terms to a mark (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.
The Panel therefore finds that the mere addition of the term “service” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.
As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsOnce a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the Complainant’s Trademark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the Complainant’s Trademark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel is of the view that the Respondent’s registration and its use of the Disputed Domain cannot be regarded as legitimate noncommercial or fair use as the Respondent appears to have registered the Disputed Domain Name solely for the purpose of misleadingly diverting visitors into thinking that the Respondent is, in some way or another, connected to, sponsored by, or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by the Complainant. Furthermore, the Panel notes that distribution of malware can never confer rights or legitimate interests in a disputed domain name. See section 2.13 of the WIPO Overview 3.0.
In addition, no evidence has been provided to prove that the Respondent has trademark rights corresponding to the Disputed Domain Name, or that the Respondent is commonly known by the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The Disputed Domain Name incorporates the Complainant’s Trademark in its entirety with the addition of the term “service”. A quick Internet search conducted by the Panel shows that the top search results returned for the term “govdelivery” are the Complainant’s websites and third party websites providing information relating to the Complainant’s services. Therefore, taking this into consideration, the Respondent must have been aware of the Complainant and the Complainant’s Trademark rights when registering and using the Disputed Domain Name.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:
(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name.
(ii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains the Complainant’s Trademark in its entirety (with the addition of the term “service”).
(iii) The Respondent used the Disputed Domain Name to redirect users to another website with various pop-up windows likely containing malware.
(iv) As discussed above, the Respondent lacks rights or legitimate interests in the Disputed Domain Name (see Washington Mutual, Inc. v. Ashley Khong,WIPO Case No. D2005-0740).
(v) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu,WIPO Case No. D2019-0193).
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name
Gabriela Kennedy
Sole Panelist
Date: March 10, 2022